EAGLE case - the setting of the cement wars?
A collection of disputes in the Philippines concerning the EAGLE trademark for cement appears to be coming to an end.
The Bureau of Legal Affairs has recently decided a number of cases all in favour of Republic Cement Corporation (formerly Lloyds Richfield Industrial Corporation). Republic is now owned by French cement and construction materials giant Lafarge. The Bureau of Legal Affairs consistently held that Republic is the owner of the mark EAGLE CEMENT, contrary to respondent Eagle Cement Corporation’s assertions. Eagle was founded by Ramon Ang, the president of industrial conglomerate San Miguel Corporation.
Republic filed several oppositions and cancellation actions against trademark applications and registrations filed and owned by Eagle. Republic alleged that its predecessor Lloyds Richfield had first adopted the mark and used it since 1992 on cement products sold in the Philippines. In 1997 Lloyds Richfield had filed an application for the mark EAGLE CEMENT, but had failed to comply with formalities requirements, thus resulting in abandonment of the application. Lloyds Richfield and then Republic continued to use the mark notwithstanding the abandonment, despite not having a proper registration.
In June 2008 Eagle filed an application and acquired a registration for the mark EAGLE CEMENT (and device). It started operations in 2010. It later filed several other applications for variations of the EAGLE CEMENT mark. Eagle contended in the dispute that Republic had no right to cancel its marks, as it had failed to file oppositions when the marks were published, and only belatedly filed cancellation actions.
The Bureau of Legal Affairs, following its own previous decisions, confirmed that registration is only a presumption of ownership, which could be overcome by evidence to the contrary. It is not an application or registration that confers ownership of a mark, but it is actual ownership of the mark which confers the right to registration.
In the cases at issue, the Bureau of Legal Affairs said that records and evidence clearly showed that Republic and Lloyds Richfield had coined, appropriated and used the contested mark on cement products well before Eagle adopted and filed applications for the exact same mark for use on identical goods.
It was perhaps a poor decision of Eagle to try and appropriate an existing mark; however Republic and Lloyds Richfield should really have got their rights in order before embarking on extensive trade. Eagle nevertheless continues to trade according to its website, so while the first round has been won by Republic, Eagle with its deep-pocketed backer will continue to fight until the war is over.
Nick Redfearn, Rouse, Indonesia
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